Preliminary injunctions are the most effective tool to put an end to the infringement of trademarks. In Germany, trademark owners can seek preliminary injunctions to obtain the following:

Restraining orders.

The seizure of infringing products.

In cases of a manifest infringement of rights, information regarding (1) the name and address of the manufacturers, suppliers and other previous proprietors of the goods or services, as well as of the commercial purchasers and points of sale for which they were intended, and (2) the quantities of the goods manufactured, delivered, received or ordered, as well as the prices paid for the goods or services in question.

If there is a sufficient probability of trademark infringement, the court may even order the putative infringer by means of an injunction to submit trade, financial or banking documents or to permit the inspection of goods, to the extent this is required by the trademark owner to prove the trademark infringement. (German Trademark Act sec. 19(1).)

German Regional Courts, which have special jurisdiction in trademark matters, generally award preliminary injunctions within a few days or even one day and without hearing the alleged infringer, provided

The court has jurisdiction;

The trademark owner has substantiated the alleged infringement in Germany; and

The matter is urgent.

The following developments in German case law have an impact on obtaining injunctions in Germany.

Jurisdiction of German Courts and Applicable Law
Regardless of the infringer’s place of business, German courts have jurisdiction for alleged trademark infringements within Germany. (Council Regulation (EC) No. 44/2001, Dec. 22, 2000, arts. 5(3), 60(1) (jurisdiction and recognition/enforcement of judgments in civil and commercial matters); German Civil Code sec. 32.) In cases of infringements on the Internet, on TV or other media that are available in several countries, German courts usually exercise their jurisdiction if the relevant content is directed to the German public in accordance with its intended purpose.

In a recent decision, the German Federal Court of Justice (FCJ) confirmed this principle. (Case I ZR 75/10 (FCJ Mar. 8, 2012)—OSCAR.) The case concerned the suit brought by the Academy of Motion Picture Arts and Sciences, as owner of two German OSCAR trademarks, against the Italian TV company RAI. RAI’s channels RAI uno, RAI due, RAI tre and RAI internationally broadcasted TV shows via satellite and cable under the titles “Oscar del vino,” “La Kore Oscar della Moda” and “Oscar TV” in the Italian language. These shows were available in several European countries, including Germany, between 2000 and 2006. According to the FCJ, the shows had been directed to the German public (at least to the part of the German public that understands the Italian language) in accordance with their intended purpose, as the defendant itself had argued that the purpose of the shows was to promote understanding for and knowledge of Italian culture and language in the world. In addition, the FCJ held that the “principle of the broadcasting country,” on which the European satellite and cable directive (Council Directive 93/83/EEC, Sept. 27, 1993) is based, did not contradict this conclusion. As a result, the FCJ confirmed that the German courts had jurisdiction in this case.

However, the FCJ further held that not every use of a mark within Germany is subject to the protection of German trademarks under German national trademark law. According to the FCJ, specific findings of fact are required in order to confirm a trademark infringement occurring within Germany if the infringer’s actions have their focus outside of the country. Otherwise, there would be the risk of a “boundless extension” of national marks.

Thus, the FCJ held that a relevant infringement within Germany exists if the activity that constitutes the alleged infringement has a sufficient commercial effect within Germany. In order to determine if this is the case, German courts should make an overall assessment of the effects of the use of the trademark on the commercial interests of the trademark owner in Germany. The decisive issue, however, is whether and to what extent the alleged infringement is only an inevitable side effect of technical or organizational circumstances beyond the infringer’s control, or whether the infringer purposefully benefits from the presence within Germany of his offers (e.g., by deliveries to Germany or creating options for consumers in Germany to order the relevant goods).

According to the FCJ, these principles are not limited to Internet-related cases, but also are applicable to cases concerning actions outside Germany that affect trademarks within Germany. In this respect, the FCJ held that the mere fact that the TV shows’ purpose was to promote understanding and knowledge of Italian culture and language in the world was not sufficient to establish a trademark infringement within Germany. Therefore, it referred the matter back to the Higher Regional Court of Berlin for the necessary overall assessment of the facts of the case. The FCJ required the court to take into consideration RAI’s argument that the satellites Eutelsat and ASTRA were not able to limit their broadcasting area to one EU member state only and that, consequently, European broadcasting would be impossible if the broadcast TV shows infringed prior trademarks within one member state alone.

Despite the fact that the Federal Court of Justice remanded the “Oscar” case to the lower court for further findings, owners of trademarks valid in Germany should always consider legal actions within Germany, even if at first glance it appears that the German market is not really affected because the alleged trademark infringement seems to originate outside Germany.

Alternative Subject Matter
According to the FCJ’s fundamental decisions in TÜV I and TÜV II (Case I ZR 108/09 (FCJ Mar. 24 and Aug. 17, 2011)), trademark owners may not base their claims on alternative subject matter and leave it up to the court to determine on which basis it will decide the case. This has been a regular practice for decades, in particular because it reduced cost risks, as, regardless of the basis on which the claimant prevailed, the defendant had to bear the costs of the proceedings. With its decision in TÜV I, however, the FCJ brought this practice to an end, holding that a claimant may not alternatively base a claim on multiple trademarks. In fact, the trademark owner now has to specify the order of the trademarks used as the basis for his claims, or else the court has to dismiss his petition for an injunction or complaint as inadmissible. The decision caused great concern, because a court’s narrow understanding of the subject matter in question might pose considerable procedural and cost risks for the trademark owner.

In its decision in the OSCAR case, the FCJ held that only a single subject matter is in dispute if the claimant invokes protection of a trademark based on:

a. Identity, under Section 14(2) No. 2 of the German Trademark Act;
b. Likelihood of confusion, under Section 14(2) No. 2; or
c. Taking unfair advantage of or affecting the distinctive character or reputation of a well-known trademark, under Section 14(2) No. 3.

Urgency
German Higher Regional Courts are the courts of final instance for preliminary injunction proceedings. Thus, the FCJ may not make decisions about general principles of urgency. As there are 24 Higher Regional Courts (of which 18 have specialized sections for trademark disputes, including 16 that are specialized Community Trade Mark Courts under Section 125e of the German Trademark Act), there are different requirements on the issue of urgency depending on the territory of the responsible Higher Regional Court.

According to the rather strict view of some Higher Regional Courts, a matter in general cannot be considered urgent if the petition for injunction is filed later than four weeks following the date the claimant became aware of the infringement. (See Higher Regional Court of Koblenz, Feb. 23, 2011, Case 9 W 698/10—Kurze Regelfrist; Higher Regional Court of Karlsruhe, Apr. 25, 2007, Case 6 U 43/07—Referenzliste.) Other courts are more flexible and focus on the special circumstances of the individual case, which might enable the claimant to successfully argue that the matter is urgent even after a period longer than four weeks. (See, inter alia, Higher Regional Court of Hamburg, June 21, 2007, Case 3 U 252/06—Rotkoffer; Higher Regional Court of Hamburg, Aug. 19, 2004, Case 3 U 29/04—t-stiftung.)

According to the case law of most Higher Regional Courts, trademark owners have no obligation to monitor the market for possible trademark infringements. Thus, the fact that a trademark owner could have become aware of the infringement of his mark at an earlier date if he had monitored the market generally does not exclude the urgency of the matter. (See, inter alia, Higher Regional Court of Cologne, Feb. 26, 3003, Case 6 U 201/02—Weinbrandpraline; Higher Regional Court of Hamburg, Apr. 16, 2008, Case 5 U 198/07—Navigon/Nav N Go.) However, the Higher Regional Court of Düsseldorf recently held that a matter was not urgent if the trademark owner failed to monitor the relevant market despite the fact that he had indications of a violation of his trademark by third parties. According to the court, the fact that the owner did not monitor the market despite such indications proved “carelessness in own matters” that precluded the assumption of urgency. Higher Regional Court of Düsseldorf, June 7, 2011, Case I-20 U 1/11—E-Sky.)

Thus, trademark owners should, by way of precaution, regularly monitor the market for possible infringements and enforce their claims without delay.

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.